Date: 20100601
Docket: T-1490-07
Citation: 2010 FC 597
BETWEEN:
ADVANCE MAGAZINE PUBLISHERS
INC.
Applicant
and
FARLEYCO MARKETING INC.
Respondent
ASSESSMENT OF
COSTS - REASONS
Bruce Preston
Assessment Officer
[1]
This
application was an appeal of a decision of the Registrar of Trade-marks. By way
of Reasons for Judgment and Judgment dated February 12, 2009 the Court
dismissed the Applicant’s appeal and awarded costs to the Respondent.
[2]
Further
to the Direction of March 5, 2010 the parties have filed Written Submissions
concerning the Assessment of Costs.
Assessable Services
[3]
The
Respondent submits that its claim of fees for services at the top end of Tariff
B, Column III, is reasonable given that the conduct of the Applicant lengthened
the proceeding. The Respondent argues that the Applicant sought an extension of
time to file additional evidence necessitating the filing of further evidence
by the Respondent. After the exchange of the additional evidence the Applicant
elected to cross-examine the Respondent’s affiants.
[4]
Concerning
fees, the Respondent further submits that it claimed limited time for the law
clerk preparing the Bill of Costs and only one counsel for the hearing despite
the attendance of two solicitors. The Respondent also contends that the
preparation and attendance at the cross-examinations were necessitated by the
Applicant’s election to cross-examine.
[5]
In
response, the Applicant submits that Item 2 does not permit separate recovery
for separate items. Concerning Item 8 and 9 the Applicant contends that the
affidavits were only 3 and 41/2 pages each. The Respondent’s claim of 5 hours
to prepare for each is excessive and the cross-examination took no longer than
3 hours total for both affiants.
[6]
Having
regard to Item 13, the Applicant submits it was a simple appeal which should be
assessed at 3 units.
[7]
The
Applicant contends that the assessment was straight-forward with no order or
direction of the Court. The Item should be taxed at 2 units. There is no evidence
that the services of the law clerk were not already part of the award for
counsel or paid by the Respondent. Therefore, services of the law clerk should
be assessed at zero.
[8]
The
Respondent’s rebuttal only addresses disbursements. There were no rebuttal
submissions concerning assessable services.
[9]
It
has been decided on several occasions that parties are entitled to a single allowance
under Item 2. I rely on Abbott Laboratories v. Canada (Minister of
Health),
2008 FC 693 at paragraph 77.
[10]
Having
found that the Respondent is entitled to only one claim under Item 2, I allow 7
units as the additional work of preparing the Affidavits of Edward Reiken
(Reiken) and Patricia Farley-Pope (Farley-Pope) were necessitated by the
additional evidence filed by the Applicant.
[11]
Having
regard to Item 8, although the affidavits of Reiken and Farley-Pope were not
lengthy they were necessitated by the filing of further evidence by the Applicant
and the Applicant elected to cross-examine the affiants. Contrary to the
submissions of the Applicant, the Respondent has not claimed 5 hours of
preparation for each cross-examination but 5 units for each. Given the length
of the affidavits, I allow Item 8 at 4 units for each cross-examination.
[12]
Concerning
Item 9, the Applicant has submitted that the cross-examinations took a total of
3 hours, the total amount of time claimed by the Respondent. Considering the
reasons above concerning the length of the affidavits and having reviewed the
transcripts, it is clear that the cross-examinations were not complicated and
included only brief re-examination, involving one or two questions. Therefore, having
regard to the above, Item 9 is allowed at 2 units for the time claimed for the
cross-examination of each of Reiken and Farley-Pope.
[13]
Item
13 is allowed at 4 units. I am in agreement with the Applicant that this was
not an overly complex hearing nor was it a lengthy hearing. Further, there were
no witnesses to prepare for the hearing as it proceeded by way of affidavit
evidence.
[14]
Concerning
Item 14, counsel fee per hour in Court, the length of the hearing is not at
issue and although the hearing was not overly complex, the additional evidence
filed by the Applicant added to the complexity of the matter. Therefore, Item
14 is allowed as presented.
[15]
Item
26 is allowed at 3 units. This assessment was conducted in writing, it was not
at all complicated and there was no cross-examination on the affidavit. Given
the length of the submissions the 6 units claimed are excessive.
[16]
The
Respondent has claimed 50% of the amount claimed for the assessment of costs
for the work of a law clerk in preparing the Bill of Costs. Although claimed
under Item 26, the services of a student-at-law, a law clerk or paralegal are
found under Item 28 in Tariff B of the Federal Courts Rules. In Bayer
AG v. Novopharm Ltd., 2009 FC 1230 at paragraph 14 it was held that as the
work of the law clerk had been previously allowed for under Item 26, “Item 28 is not allowed in order
to prevent indemnification twice for the same service”. The same reasoning
applies in the current circumstance, therefore, the claim for the services of a
law clerk is not allowed.
Disbursements
[17]
The
Respondent submits that the disbursements claimed are reasonable and that photocopying
was charged at an acceptable rate of $0.25 per page. Counsel contends that this
is reasonable given the filing of additional evidence, cross-examinations and
written materials.
[18]
Respondent’s
counsel argues that the expert fee for Mr. Reiken is reasonable and appropriate
given the requirement to address the Applicant’s evidence.
[19]
The
Respondent’s final submission is that the remaining disbursements are within
reason given the nature of the proceeding.
[20]
The
Applicant does not object to facsimile, courier or transcript charges. However,
counsel submits that a claim for over 6000 pages of photocopying at $0.25 per
page is excessive and that the expert fee for Mr. Reiken should be assessed at
zero as he was not put forward as an expert nor was he qualified by the Court
as an expert.
[21]
The
Applicant further submits that Quicklaw charges are not supported by evidence
linking them to the issues and should be assessed at zero.
[22]
The
final submission of the Applicant is that long distance charges should be
assessed at zero as the Respondent and affiants reside in Mississauga and Markham. As a result,
the necessity for long distance is not apparent.
[23]
By
way of rebuttal the Respondent submits that the disbursements for Mr. Reiken
are reasonable and required because of the additional evidence filed by the
Applicant. Mr. Reiken was hired to identify, locate and obtain a variety of
products from diverse fields bearing the trade-mark Glamour. His evidence was
necessary to counter the Applicant’s argument of confusion. In support of their
argument that the fees of a private investigator are allowable disbursements, counsel
cites Interbox Promotion Corp. v. 2428-0414 Québec Inc., 2001 FCT 622.
[24]
In
rebuttal to the Applicant’s submissions concerning photocopies the Respondent
refers to the Affidavit of Cynthia D. Mason to support the argument that the
photocopies relate to the affidavit evidence, authorities and written argument
prepared by the Respondent. Counsel submits that the charges are reasonable and
appropriate and should be allowed.
[25]
Finally,
concerning Quicklaw, the Respondent submits that the Affidavit of Ms. Mason
attests to the fact that the charges related to the application, were charged
to the Respondent, are allowable costs and are not overhead. Counsel further
submits that the charges are low and reasonable given the need for legal
research in the application.
[26]
On
May 10, 2010 counsel for the Applicant submitted a letter in reply to the
Respondent’s rebuttal, however, as the Direction of March 5, 2010 did not
provide for further representations and as the Applicant did not seek leave to
file the letter, it will not be considered.
[27]
Mr.
Reiken has been characterized in the Bill of Costs as an expert. In Bayer,
supra, there is a discussion concerning the difference between a fact
witness and an expert or opinion witness. In reviewing the affidavit of Mr.
Reiken it is clear that he was a fact witness. At paragraph 2 to his affidavit
he states he was retained to identify, locate and obtain a variety of products
from diverse fields bearing the trade-mark Glamour. At no point in the
affidavit does he provide an opinion concerning the possibility of confusion
with the Applicant’s trade-mark or any other matter which requires an opinion.
Further, although the Court makes reference to Mr. Reiken’s evidence, at no
time does the Court identify him as an expert or make reference to an opinion
he provided. As Tariff A provides different fee structures for fact witnesses
and expert witnesses, and as Mr. Reiken cannot be considered an expert, the
Respondent’s disbursement for Mr. Reiken’s services cannot be allowed.
[28]
I
am in agreement with counsel for the Applicant that 6000 plus photocopies seems
excessive. Having reviewed the Respondent’s Record, it contains fewer than 100
pages. Taking into account the Book of Authorities, Respondent’s Motion Record
and supporting Book of Authorities, and recognizing that there is a requirement
for five copies of each, I will allow $920.00 for photocopying.
[29]
Having
regard to Quicklaw, given the amount of the disbursement, I am satisfied that
the evidence contained in the Affidavit of Cynthia Mason is sufficient. To
require further particulars for a disbursement of less than $100.00 would be
more costly than the disbursement itself. Therefore the disbursement for
Quicklaw is allowed as claimed.
[30]
Although
the Applicant has submitted that there would be no need to incur long distance
charges, it is not inconceivable that $26.34 in long distance charges could be
incurred in the process of the litigation. Long distance charges are allowed as
claimed.
[31]
As
the Applicant has not objected to the remaining disbursements they are allowed
as claimed.
[32]
For
the above reasons the costs of the Respondent, claimed
at $11,645.54 are assessed and allowed at $6,046.64. A Certificate
of Assessment will be issued.
“Bruce Preston”
Toronto, Ontario
June 1, 2010
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